Judge Pallmeyer denied plaintiff’s motion for summary judgment regarding its Lanham Act false designation claim. Plaintiff began using the Japonais mark in conjunction with its Chicago area European/Japanese fusion restaurant in 2003. Plaintiff later opened New York and Las Vegas locations. But plaintiff did not register the Japonais mark. In 2004, defendant filed an intent to use trademark application for the Japonais mark to be used in connection with restaurants. In order to receive the registration, defendant was required to use the mark in commerce. Once that use occurred and was properly documented, defendant’s mark would have a 2004 constructive use date, as opposed to the later date of actual first use. Defendant has filed a verified statement of use, so the parties agree that defendant’s registration is a formality. Plaintiff, however, believed that it would succeed in a cancellation proceeding against the mark.

The Court noted that as the senior user, plaintiff had a right to use the mark in the Chicago area. But there was a question of fact as to whether plaintiff’s later opened New York restaurant had sufficiently penetrated the New York market before defendant’s 2004 constructive use date. Furthermore, to the extent plaintiff had actual notice of defendant’s application, any rights plaintiff might have had in New York would not be enforceable against defendant. Furthermore, the Court noted that granting plaintiff’s motion could result in the bizarre outcome of defendant being liable for violating plaintiff’s trademark today, but tomorrow, after issuance of defendant’s mark, defendant may be able to assert the trademark against plaintiff.

Blawg Review #182 is up at Dave Gulbransen’s blog — click here to read it. Having just passed the Illinois bar exam (congratulations), Gulbransen did his review in the form of the multiple choice portion of the exam. You can even check your answers. Gulbransen’s exam contains a heavy dose of IP, unlike the exam itself. Here are a few of the IP posts:

Citizen Media Law Project — discussing Digital Millennium Copyright Act take down notices as used by, or against, the presidential campaigns and how the appeal process does not help campaigns because it takes 10 – 14 days.

As I have described in earlier posts (click here, here and here) plaintiff Jones Day sued defendants, BlockShopper LLC and two individuals associated with the website (collectively "Blockshopper"), for allegedly using Jones Day’s service marks and linking to its website in at least two articles discussing Chicago real estate transactions of Jones Day associates. Jones Day claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition. Plaintiff also moved for a temporary restraining order (“TRO”). The parties stipulated to a TRO which the Court entered ordering defendants not to: 1) use Jones Day’s service mark; 2) use any content from or link to Jones Day’s website; or reference Jones Day in Blockshopper headlines.

Last Friday, Blockshopper filed a motion to dismiss. And several public interest groups — the Electronic Frontier Foundation, Public Knowledge and the Citizen Media Law Project — has sought leave to file this amicus brief supporting Blockshopper’s motion to dismiss. Jones Day opposed the motion, arguing that the three groups and their arguments do not meet any of the Seventh Circuit’s standards for amicus filings. I will keep you posted about the case generally and as to whether the Court enters the amicus brief.

Public Citizen at its Consumer Law & Policy blog (acknowledging that he was incorrect as to the timing of an alleged quote from Judge Darrah, which he also did in a comment to my post discussing the alleged quote)

Shortly after my Friday post updating the list of regional IP blogs, Mark Walters, of the Washington State Patent Law Blog, pointed out that I had left him off the list. The mistake was unintentional and I have remedied it in the original post and the list that follows this paragraph. In the process of gathering links to revise my list, I came across the Georgia Patent Law Blog in the Washington State Patent Law Blog’s blogroll. So, now I have two blogs to update:

[UPDATE]: I was quickly reminded that I forgot the excellent Washington State Patent Law Blog, which has been added to this post, and in that process I discovered the Georgia Patent Law Blog, also added, thanks to Mark Walter’s (Washington State Patent Law Blog) blog roll.

If you know of other regional IP blogs, post a comment or send me an email and I will add them to the list. A hat tip to Mike Atkins for pointing out the new blog at his Seattle Trademark Lawyer blog.

Since my last post listing the Blog’s "cousin" blogs — regional IP blogs – several have joined the family. The Washington State Patent Law Blog and the Las Vegas Trademark Attorney have both started in the last several months. Welcome to the family. Here is the revised list:

R. David Donoghue is a patent trial attorney and partner with Holland & Knight’s Intellectual Property Group in Chicago. A trusted counselor to his retail and supply chain clients, Dave routinely speaks to groups of all sizes on an array of intellectual property topics. Chicago IP Litigation was created to help businesses understand their intellectual property rights and how to drive their cases to positive resolution.

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This Blog/Web Site ("Blog") does not to provide specific legal advice, it is for educational purposes only. Use of the Blog does not create any attorney-client relationship between you and R. David Donoghue or his firm. The Blog does not constitute legal advice and is not a substitute for competent legal advice from a licensed attorney in your state. Any comment posted on the Blog can be read by any Blog visitor; do not post confidential or sensitive information. Any links from another site to the Blog are beyond the control of R. David Donoghue or his firm and do not convey their approval, support or any relationship to any site or organization.